national arbitration forum

 

DECISION

 

Time Warner, Inc. v. The Real South c/o Joseph Rollins

Claim Number: FA0810001230674

 

PARTIES

Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington, D.C., USA.  Respondent is The Real South c/o Joseph Rollins (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <cnncares.com>, <cnncares.org>, <aolcares.com>, <aolcares.org>, <timewarnercares.com>, <timewarnercares.org>, <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org>, registered with Wild West Domains, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2008.

 

On October 24, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cnncares.com>, <cnncares.org>, <aolcares.com>, <aolcares.org>, <timewarnercares.com>, <timewarnercares.org>, <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 25, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cnncares.com, postmaster@cnncares.org, postmaster@aolcares.com, postmaster@aolcares.org, postmaster@timewarnercares.com, postmaster@timewarnercares.org, postmaster@thewbcares.com, postmaster@thewbcares.org, postmaster@wbcares.com and postmaster@wbcares.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cnncares.com> and <cnncares.org> domain names are confusingly similar to Complainant’s CNN mark.  Respondent’s <aolcares.com> and <aolcares.org> domain names are confusingly similar to Complainant’s AOL mark.  Respondent’s <timewarnercares.com> and <timewarnercares.org> domain names are confusingly similar to Complainant’s TIME WARNER mark.  Respondent’s <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org> domain names are confusingly similar to Complainant’s THE WB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cnncares.com>, <cnncares.org>, <aolcares.com>, <aolcares.org>, <timewarnercares.com>, <timewarnercares.org>, <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org> domain names.

 

3.      Respondent registered and used the <cnncares.com>, <cnncares.org>, <aolcares.com>, <aolcares.org>, <timewarnercares.com>, <timewarnercares.org>, <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a media and entertainment company.  Complainant registered the CNN mark with the United States Patent and Trademark Office (“USPTO”) on May 22, 1990 (Reg. No. 1,597,839); Complainant has used the mark continuously in commerce since at least as early as that date.  Complainant registered the AOL mark with the USPTO on June 4, 1996 (Reg. No. 1,977,731); Complainant has used the mark continuously in commerce since at least as early as that date.  Complainant registered the TIME WARNER mark with the USPTO on January 11, 1994 (Reg. No. 1,816,474); Complainant has used the mark continuously in commerce since at least as early as that date.  Complainant registered the THE WB mark with the USPTO on April 30, 1996 (Reg. No. 1,971,247); Complainant has used the mark continuously in commerce since at least as early as that date.  Complainant is a Fortune 500 company with millions of subscribers to its services around the world.

 

Respondent registered the <cnncares.com> and <cnncares.org> domain names on May 6, 2006.  Respondent registered the <aolcares.com>, <aolcares.org>, <timewarnercares.com>, and <timewarnercares.org> domain names on May 8, 2006.  Respondent registered the <thewbcares.com>, <thewbcares.org>, <wbcares.com>, and <wbcares.org> domain names on August 26, 2008.  The disputed domain names redirect Internet users to Respondent’s own commercial website (which is unrelated to Complainant’s business) at the <therealsouth.com> domain name.  Additionally, Respondent contacted Complainant to notify Complainant that Respondent owned certain of the disputed domain names, and after further correspondence, Respondent offered to sell the <aolcares.com> domain name to Complainant for $3,830.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the CNN, AOL, TIME WARNER, and THE WB marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

 

Complainant contends that Respondent’s <cnncares.com> and <cnncares.org> domain names are confusingly similar to its CNN mark.  These domain names differ from Complainant’s mark in two ways: (1) the generic term “cares” has been added to the end of the mark; and (2) a generic top-level domain (gTLD), either “.com” or “.org,” has been added to the mark.  Under Policy ¶ 4(a)(i), the addition of a generic term does not sufficiently alter the meaning of a domain name to distinguish it from a mark it incorporates; similarly, the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark.  See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Therefore, the Panel finds the <cnncares.com> and <cnncares.org> domain names are confusingly similar to Complainant’s CNN mark, and so Respondent’s <cnncares.com> and <cnncares.org> domain names are not sufficiently distinguished from Complainant’s CNN mark pursuant to Policy ¶ 4(a)(i). 

 

Complainant contends that Respondent’s <aolcares.com> and <aolcares.org> domain names are confusingly similar to its AOL mark.  These domain names differ from Complainant’s mark in two ways: (1) the generic term “cares” has been added to the end of the mark; and (2) a generic top-level domain (gTLD), either “.com” or “.org,” has been added to the mark.  As stated before, under Policy ¶ 4(a)(i), the addition of a generic term does not sufficiently alter the meaning of a domain name to distinguish it from a mark it incorporates; similarly, the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark.  See Am. Online Inc., supra; see also Nev. State Bank, supra.  Therefore, the Panel finds the <aolcares.com> and <aolcares.org> domain names are confusingly similar to Complainant’s AOL mark, and so Respondent’s <aolcares.com> and <aolcares.org> domain names are not sufficiently distinguished from Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <timewarnercares.com> and <timewarnercares.org> domain names are confusingly similar to its TIME WARNER mark.  These domain names differ from Complainant’s mark in three ways: (1) the space between the words has been removed; (2) the generic term “cares” has been added to the end of the mark; and (3) a generic top-level domain (gTLD), either “.com” or “.org,” has been added to the mark.  As stated before, under Policy ¶ 4(a)(i), the addition of a generic term does not sufficiently alter the meaning of a domain name to distinguish it from a mark it incorporates; similarly, the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark.  Removing spaces between the words of a mark also does not distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i).  See Am. Online Inc., supra; see also Nev. State Bank, supra; see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).  Therefore, the Panel finds the <timewarnercares.com> and <timewarnercares.org> domain names are confusingly similar to Complainant’s TIME WARNER mark, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s TIME WARNER mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <thewbcares.com> and <thewbcares.org> domain names are confusingly similar to its THE WB mark.  These domain names differ from Complainant’s mark in three ways: (1) the space between the words has been removed; (2) the generic term “cares” has been added to the end of the mark; and (3) a generic top-level domain (gTLD), either “.com” or “.org,” has been added to the mark.  As stated before, under Policy ¶ 4(a)(i), the addition of a generic term does not sufficiently alter the meaning of a domain name to distinguish it from a mark it incorporates, nor does removing spaces; similarly, the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark.  See Am. Online Inc. v. Neticq.com Ltd., supra; see also State Farm Mut. Auto. Ins. Co., supra; see also Nev. State Bank, supra.  Therefore, the Panel finds the <thewbcares.com> and <thewbcares.org> domain names are confusingly similar to Complainant’s THE WB mark, and so Respondent’s <thewbcares.com> and <thewbcares.org> domain names are not sufficiently distinguished from Complainant’s THE WB mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <wbcares.com> and <wbcares.org> domain names are confusingly similar to its THE WB mark.  These domain names differ from Complainant’s mark in three ways: (1) the word “the” has been removed from the mark; (2) the generic term “cares” has been added to the end of the mark; and (3) a generic top-level domain (gTLD), either “.com” or “.org,” has been added to the mark.  As stated before, under Policy ¶ 4(a)(i), the addition of a generic term does not sufficiently alter the meaning of a domain name to distinguish it from a mark it incorporates; similarly, the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark.  Removing an article from a mark also does not sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i).  See Am. Online Inc. v. Neticq.com Ltd., supra; see also Nev. State Bank, supra; see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark).  Therefore, the Panel finds the <wbcares.com> and <wbcares.org> domain names are confusingly similar to Complainant’s THE WB mark, and so Respondent’s <wbcares.com> and <wbcares.org> domain names are not sufficiently distinguished from Complainant’s THE WB mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names.  Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant contends that Respondent is not commonly known by the disputed domain names nor has it ever been the owner or licensee of the any of Complainant’s marks in question in this case.  Each WHOIS record for the disputed domain names lists Respondent as “The Real South c/o Joseph Rollins.”  Additionally, Respondent has failed to show any evidence contrary to Complainant’s contentions.  Because there is no evidence that Respondent has ever been known by any variant on any of Complainant’s marks, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent is using the disputed domain names to redirect Internet users to Respondent’s own commercial website which is unrelated to Complainant’s business.  The Panel finds that Respondent’s use of the disputed domain names for commercial gain is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Respondent has, in the course of communications with Complainant, offered to sell the <aolcares.com> domain name to Complainant.  An offer to sell a disputed domain name is evidence that a respondent has given up any claim to rights or legitimate interests in the domain name.  Therefore, the Panel finds that Respondent’s offer to sell the <aolcares.com> domain name to Complainant is evidence that Respondent lacks any and all rights and legitimate interests in the <aolcares.com> domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has offered to sell the <aolcares.com> domain name to Complainant.  Registering a domain name that has value because it incorporates a trademark held by another, and then offering to sell that domain name to that party who holds the rights to the trademark for an amount in excess of its registration costs, is evidence that the registrant has registered and is using the domain name in bad faith.  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").  The Panel finds that Respondent’s offer to sell the <aolcares.com> domain name to Complainant, the holder of rights to the AOL mark, is evidence that Respondent registered and used the <aolcares.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).  

 

Complainant contends that Respondent is gaining commercially from the redirection of Internet users to Respondent’s own commercial website.  The Panel agrees, and finds that Respondent is intentionally using the disputed domain names for commercial gain by creating a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use of the disputed domain names in bad faith.  See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cnncares.com>, <cnncares.org>, <aolcares.com>, <aolcares.org>, <timewarnercares.com>, <timewarnercares.org>, <thewbcares.com>, <thewbcares.org>, <wbcares.com> and <wbcares.org> domain names be TRANSFERRED from Respondent to Complainant.

 

__________________________________________________________________

 

 

 

 

Honorable Paul A. Dorf (Ret.) , Panelist

Dated:  December 17, 2008

 

 

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